Well-known high street retailer Topshop has been unsuccessful in its appeal of an earlier decision finding that it had engaged in passing off by selling t-shirts featuring a distinctive photograph of pop star Rihanna, without her authorisation. In its decision, the Court of Appeal upheld the finding of the trial judge that, in the particular circumstances of this case, the sale of the t-shirts constituted a misrepresentation that they had been endorsed or authorised by Rihanna, causing damage to Rihanna's goodwill.
1. Business impact
- In contrast to other jurisdictions such as the US, the UK does not recognise an image or personality right, by which a celebrity can control the use of their name or image. However, this case serves as an important reminder that celebrities may be able to rely upon alternative causes of action, such as passing off, in order to prevent the unauthorised use of their image.
- The outcome of this case depended very much upon the particular circumstances of the case, and indeed, Lord Justice Underhill described this case as 'close to the borderline'. For this reason, this decision is unlikely to open the floodgates for such cases.
- Nevertheless, businesses should exercise caution when using images of celebrities without their permission to avoid the risk that the image may falsely represent that the celebrity has provided their endorsement or approval and give rise to liability for passing off.
In 2012, Topshop offered for sale, both in store and online, a t-shirt featuring a photograph of well-known pop star Rihanna. The photograph was not just any photograph, but was rather a 'clearly recognisable image of Rihanna' taken during a video shoot for a single from her 'Talk, Talk, Talk' album. While Topshop had obtained a licence to use the specific photograph from the copyright holder (an independent third party photographer), Topshop had not obtained permission from Rihanna.
Rihanna (together with two of her corporate licensing entities) commenced proceedings against Topshop alleging passing off, on the basis that a substantial number of people buying the t-shirt would be deceived into believing that Rihanna had endorsed or approved the t-shirt, when this was not in fact the case.
At first instance, Justice Birss upheld Rihanna's claim, finding that in the particular circumstances of this case, the sale of the t-shirts featuring the photograph of Rihanna did amount to passing off (a copy of this decision can be found here). The particular circumstances relied upon by Birss J included that:
- Rihanna had sought to promote a specific association between herself and fashion, and was regarded by many people as a style icon.
- Topshop on a number of occasions had sought to emphasise connections between it and stylish celebrities, including Rihanna. This included a competition where the prize was a private shopping appointment with Rihanna in one of Topshop's stores, and publicising when Rihanna was pictured wearing Topshop items or visiting Topshop stores.
- The image featured in the photograph had the appearance of an authorised publicity shot, and had the same features as some of the images used by Rihanna for the 'Talk, Talk, Talk' album. As a result, people familiar with her work may have thought it was part of the promotional campaign for that album.
3. The Court of Appeal decision
Topshop's appeal was unanimously rejected by the Court of Appeal, constituted by Lord Justices Kitchen, Underhill and Richards (see Fenty & Ors v Arcadia Group Brands Limited & Ors  EWCA Civ 3).
In rejecting the appeal, Lord Justice Kitchen reiterated that there is no recognised image or personality right in the UK through which a celebrity may control the use of their image. As a result, celebrities must seek to rely upon alternative causes of action, including passing off. However, the Judge emphasised that passing off is directed to protecting goodwill, and is not designed to protect a person against fair competition.
Before the Court of Appeal, Topshop relied upon a number of appeal grounds, including that:
- Birss J erred in failing to distinguish between a passing off case relating to character merchandising, and one relating to endorsement;
- the decision essentially was one of misrepresentation by omission, for failing to inform purchasers that the t-shirts were not authorised by Rihanna. However, this was inconsistent with the principle that the sale of an item bearing the recognisable image of a famous person does not, in itself, amount to passing off;
- Birss J erred in considering the issue of misrepresentation from the perspective of potential purchasers who would view the presence of the photo on the t-shirt as an indication of authorisation, and should have considered this issue from the perspective of a purchaser for whom such a photo was 'origin neutral'.
In relation to the first ground of appeal, Kitchen LJ explained that character merchandising involves exploiting images, themes or articles which have become famous in circumstances where it is not a necessary feature that the public will think those connected with the image have endorsed it. In contrast, endorsement involves a relationship between the characters or celebrities and the goods bearing their image, implying authorisation and approval. Kitchen LJ held that the trial judge did have proper regard to the distinction between the two and there was no error of principle in relation to his reasoning and finding that the appearance of the particular photograph on the t-shirt amounted to a representation that Rihanna had endorsed it.
In relation to the second ground of appeal, the Court held that there was no inconsistency in this case. The finding that Topshop had engaged in passing off was not based simply on the use of Rihanna's image alone, but the use of a particular image in a particular way such as to give rise to a misrepresentation.
Finally, in relation to the third ground of appeal, Kitchen LJ held that Topshop's argument would require the court 'both to shut its eyes to reality and to put on one side well settled principles'. Kitchen LJ considered that it was plainly relevant to consider potential customers who were both Rihanna fans and prepared to shop in Topshop, and to take into account Topshop's activities in publicising its connection with Rihanna.
4. Potential impact
Although Rihanna was ultimately successful in this case, the judgments at both levels make clear that this outcome depended very much on the specific circumstances of this case, particularly Rihanna's past association with Topshop and the distinctive features of the image that was used. Lord Justice Underhill described the case as 'close to the borderline', and commented that had only one of these circumstances been present, the outcome may have been different.
In light of this, it is unlikely that this decision will lead to a marked increase in passing off claims by celebrities as a means of controlling the use of their image. Nevertheless, businesses should tread carefully when using images of celebrities in connection with their business and ensure that any use does not give rise to a misrepresentation of approval or endorsement in the particular circumstances.